37 C.F.R. 1.131
Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.

(a) When any claim of an
application or a patent under reexamination is rejected, the inventor of the
subject matter of the rejected claim, the owner of the patent under
reexamination, or the party qualified under § 1.42 or
§
1.46, may submit an appropriate oath or declaration to
establish invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is based.
The effective date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article
21(2) is the earlier of its publication date or the date
that it is effective as a reference under 35 U.S.C.
102(e) as in effect on March 15, 2013. Prior invention
may not be established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may not be
established under this section before December 8, 1993, in a NAFTA country
other than the United States, or before January 1, 1996, in a WTO member
country other than a NAFTA country. Prior invention may not be established
under this section if either:

(1) The rejection is based upon
a U.S. patent or U.S. patent application publication of a pending or patented
application naming another inventor which claims interfering subject matter as
defined in § 41.203(a) of this title,
in which case an applicant may suggest an interference pursuant to
§ 41.202(a) of this title;
or

(2) The rejection is based upon
a statutory bar.

(b) The showing of facts for an
oath or declaration under paragraph (a) of this section shall be such, in
character and weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention prior to the
effective date of the reference coupled with due diligence from prior to said
date to a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence must
be satisfactorily explained.

*****

(c) When any claim of an application or a
patent under reexamination is rejected under 35 U.S.C.
103 as in effect on March 15, 2013, on a U.S. patent or
U.S. patent application publication which is not prior art under
35 U.S.C. 102(b) as in effect on March 15, 2013, and the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent or published application are not
identical but are not patentably distinct, and the inventions are owned by the
same party, the applicant or owner of the patent under reexamination may
disqualify the patent or patent application publication as prior art. The
patent or patent application publication can be disqualified as prior art by
submission of:

(2) An oath or declaration stating
that the application or patent under reexamination and patent or
published application are currently owned by the same party, and that the
inventor named in the application or patent under reexamination is the
prior inventor under 35 U.S.C. 104 as in
effect on March 15, 2013.

(d) The provisions of this section apply
to any application for patent, and to any patent issuing thereon, that
contains, or contained at any time:

(1) A claim to an invention that has
an effective filing date as defined in 35 U.S.C.
100(i) that is before March 16, 2013;
or

(2) A specific reference under
35 U.S.C. 120, 35 U.S.C.
121, or 365(c) to any patent or application that
contains, or contained at any time, a claim to an invention that has an
effective filing date as defined in 35 U.S.C.
100(i) that is before March 16,
2013.

(e) In an application for patent to which
the provisions of § 1.130 apply, and to any
patent issuing thereon, the provisions of this section are applicable only with
respect to a rejection under 35 U.S.C. 102(g) as in
effect on March 15, 2013.

Under 37 CFR
1.131(a) which provides for the establishment of a date of completion
of the invention in a NAFTA or WTO member country, as well as in the United States, an
applicant can establish a date of completion in a NAFTA member country on or after December
8, 1993, the effective date of section 331 of Public Law 103-182, the North American Free
Trade Agreement Act, and can establish a date of completion in a WTO member country other
than a NAFTA member country on or after January 1, 1996, the effective date of section 531
of Public Law 103-465, the Uruguay Round Agreements Act (URAA). Acts occurring prior to the
effective dates of NAFTA or URAA may be relied upon to show completion of the invention;
however, a date of completion of the invention may not be established under
37 CFR
1.131(a) before December 8, 1993, in a NAFTA country or before
January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to
pre-AIA 35 U.S.C.
104.

If a country joined the WTO after
January 1, 1996, the effective date for proving inventive activity in that country for the
purpose of pre-AIA 35 U.S.C. 104 and
37 CFR
1.131(a) is the date the country becomes a member of the WTO. See
MPEP §
213.01 for a list that includes WTO member
countries.

Any printed publication or activity
dated prior to an applicant’s or patent owner’s effective filing date, or any domestic
patent of prior filing date, which is in its disclosure pertinent to the claimed invention,
is available for use by the examiner as a reference in the rejection of the claims of the
application or patent under reexamination. In addition, patent application publications and
certain international application publications having an effective prior art date prior to
the application being examined may be used in a rejection of the claims. See
MPEP
§ 706.02(a) and § 2136 -
§
2136.03.

Such a rejection may be overcome, in
certain instances noted below, by filing of an affidavit or declaration under
37 CFR
1.131(a), known as “swearing back” of the reference.

It should be kept in mind that it is the
rejection that is withdrawn and not the reference.

I.
SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE
USED

(A) To antedate a reference or
activity that qualifies as prior art under pre-AIA 35 U.S.C.
102(a) and not under pre-AIA 35 U.S.C.
102(b), e.g., where the prior art date under
pre-AIA 35 U.S.C. 102(a) of
the patent, the publication or activity used to reject the claim(s) is less
than 1 year prior to applicant’s or patent owner’s effective filing date. If
the prior art reference under pre-AIA 35 U.S.C.
102(a) is a U.S. patent or U.S. patent application
publication, the reference may not be antedated if it claims interfering
subject matter as defined in 37 CFR 41.203(a). See
MPEP § 715.05 for a discussion
of “interfering subject matter.”

(C) During examination, to antedate an
activity that qualifies as prior art under pre-AIA 35 U.S.C. 102(g)
and not under pre-AIA 35 U.S.C. 102(b),
e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of
the activity used to reject the claim(s) is less than 1 year prior to
applicant’s or patent owner’s effective filing date. If the evidence of the
activity under pre-AIA 35 U.S.C. 102(g) is
a U.S. patent or U.S. patent application publication, the evidence may not be
antedated if it claims interfering subject matter as defined in
37 CFR
41.203(a). See MPEP § 715.05 for a discussion
of
"interfering subject
matter"
.

(C) Where the reference U.S.
patent or U.S. patent application publication claims interfering subject matter
as defined in 37 CFR 41.203(a). See MPEP §
715.05 for a discussion of
"interfering subject matter"
and
MPEP Chapter 2300 . Where the
reference patent and the application or patent under reexamination are commonly
owned, and the inventions defined by the claims in the application or patent
under reexamination and by the claims in the patent are not identical but are
not patentably distinct, a terminal disclaimer and an affidavit or declaration
under 37 CFR 1.131(c) may be used
to overcome a rejection under 35 U.S.C.
103. See MPEP § 718.

(D) Where the reference is a
foreign patent for the same invention to applicant or patent owner or his or
her legal representatives or assigns issued prior to the filing date of the
domestic application or patent on an application filed more than 12 months
prior to the filing date of the domestic application. See pre-AIA 35
U.S.C. 102(d).

(E) Where the effective filing
date of applicant’s or patent owner’s parent application or an International
Convention proved filing date is prior to the effective date of the reference,
an affidavit or declaration under 37 CFR 1.131(a) is
unnecessary because the reference should not have been used. See
MPEP §§ 211 - 216 .

(F) Where the reference is a
prior U.S. patent to the same entity, claiming the same invention. The question
involved is one of “double patenting.”

(G) Where applicant has
clearly admitted on the record that
subject matter relied on in the reference is prior art. In this case, that
subject matter may be used as a basis for rejecting his or her claims and may
not be overcome by an affidavit or declaration under 37 CFR
1.131. In re Hellsund,
474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re
Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA
1964); In re Lopresti, 333 F.2d 932, 142
USPQ 177 (CCPA 1964).

(I) Where the subject matter
corresponding to a lost count in an interference is either prior art under
pre-AIA 35 U.S.C. 102(g) or
barred to applicant by the doctrine of interference estoppel. In re Bandel, 348 F.2d 563, 146 USPQ 389 (CCPA
1965); In re Kroekel, 803 F.2d 705, 231 USPQ
640 (Fed. Cir. 1986). See also In re
Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992) (Under the
principles of res judicata and collateral estoppel, applicant was not entitled to
claims that were patentably indistinguishable from the claim lost in
interference even though the subject matter of the lost count was not available
for use in an obviousness rejection under 35 U.S.C.
103). But see In re
Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing
party to an interference, on showing that the invention now claimed is not
“substantially the same” as that of the lost count, may employ the procedures
of 37 CFR 1.131(a) to antedate
the filing date of an interfering application). On the matter of when a “lost
count” in an interference constitutes prior art under pre-AIA 35
U.S.C. 102(g), see In re
McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not
prior art under pre-AIA 35 U.S.C. 102(g) as
to the loser of an interference where the count was lost based on the winner’s
foreign priority date). Similarly, where one party in an interference wins a
count by establishing a date of invention in a NAFTA or WTO member country (see
pre-AIA 35 U.S.C. 104), the
subject matter of that count is unpatentable to the other party by the doctrine
of interference estoppel, even though it is not available as statutory prior
art under pre-AIA 35 U.S.C. 102(g). See
MPEP § 2138.01 and
§ 2138.02.

III.
REFERENCE DATE TO BE OVERCOME

The date to be overcome under
37 CFR
1.131(a) is the effective date of the reference (i.e., the date on
which the reference is available as prior art).

A.
U.S. Patents, U.S. Patent Application Publications, and
International Application Publications

The effective date of a domestic
patent when used as a reference in a rejection under pre-AIA 35 U.S.C.
102(e) is not the foreign filing date to which the application
for patent may have been entitled under 35 U.S.C. 119(a)
during examination. In re Hilmer, 359 F.2d 859,
149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under 37 CFR
1.131(a) is the effective U.S. filing date, not the foreign
priority date. When a U.S. patent or U.S. patent application publication reference is
entitled to claim the benefit of an earlier filed application, its effective filing
date is determined under pre-AIA 35 U.S.C. 102(e). See
MPEP
§ 706.02(a), § 706.02(f)(1), and
§
2136 through § 2136.03.

B.
Foreign Patents

C.
Printed Publications

A printed publication, including a
published foreign patent application, is effective as of its publication date, not
its date of receipt by the publisher. For additional information regarding effective
dates of printed publications, see MPEP § 2128 through
§ 2128.02.

D.
Activities

An applicant may make an
admission, or submit evidence of use of the invention or knowledge of the invention
by others, or the examiner may have personal knowledge that the invention was used or
known by others in this country. See MPEP § 706.02(c) and
§
2133.03. The effective date of the activity used to reject
the claim(s) is the date the activity was first known to have
occurred.

FORM PARAGRAPHS

The [1] filed on [2] under
37 CFR
1.131(a) has been considered but is ineffective to overcome the
[3] reference.

Examiner Note:

1. In bracket 1, insert either --affidavit-- or
--declaration--.

2. This form paragraph must be followed by one or more
of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth
proper basis for the insufficiency, such as failure to establish acts performed in this
country, or that the scope of the declaration or affidavit is not commensurate with the
scope of the claim(s).

The [1] reference is a
U.S. patent or U.S. patent application publication of a pending or patented application that
claims the rejected invention. An affidavit or declaration is inappropriate under
37 CFR
1.131(a) when the reference is claiming interfering subject matter as
defined in 37 CFR 41.203(a), see MPEP Chapter
2300.
If the reference and this application are not commonly owned, the reference can only be
overcome by establishing priority of invention through interference proceedings. See MPEP
Chapter 2300 for information on initiating interference proceedings. If the
reference and this application are commonly owned, the reference may be disqualified as prior
art by an affidavit or declaration under 37 CFR 1.131(c). See MPEP § 718.

Examiner Note:

1. If used to respond to the
submission of an affidavit under 37 CFR 1.131(a), this paragraph must
be preceded by paragraph 7.57.fti.

2. This form paragraph may be used
without form paragraph 7.57.fti when an affidavit has not yet been filed, and
the examiner desires to notify applicant that the submission of an affidavit under
37 CFR
1.131(a) would be inappropriate.

Examiner Note:

The evidence submitted is insufficient to establish a
conception of the invention prior to the effective date of the [1] reference.
While conception is the mental part of the inventive act, it must be capable of proof, such as
by demonstrative evidence or by a complete disclosure to another. Conception is more than a
vague idea of how to solve a problem. The requisite means themselves and their interaction
must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81
O.G. 1417 (D.C. Cir. 1897). [2]

Examiner Note:

2. An explanation of the deficiency in the showing of
conception must be presented in bracket 2.

3. If the affidavit additionally fails to establish
either diligence or a subsequent reduction to practice, this form paragraph should be
followed by form paragraph 7.62.fti and/or 7.63.fti. If either diligence or a
reduction to practice is established, a statement to that effect should follow this
paragraph.

The evidence submitted is insufficient to establish
diligence from a date prior to the date of reduction to practice of the [1]
reference to either a constructive reduction to practice or an actual reduction to practice.
[2]

Examiner Note:

2. If the affidavit additionally fails to establish
conception, this paragraph must also be preceded by form paragraph
7.61.fti.
If the affidavit establishes conception, a statement to that effect should be added to
this paragraph.

3. If the affidavit additionally fails to establish an
alleged reduction to practice prior to the application filing date, this paragraph must
be followed by form paragraph 7.63.fti. If such an alleged reduction to practice is
established, a statement to that effect should be added to this
paragraph.

4. An explanation of the reasons for a holding of
non-diligence must be provided in bracket 2.

5. See MPEP §
715.07(a)
which
explains
that diligence is not required after reduction to practice.

The evidence submitted is insufficient to establish
applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA
or WTO member country after the effective date of the [1] reference.
[2].

Examiner Note:

2. If the alleged reduction to practice is prior to the
effective date of the reference, do not use this paragraph. See form paragraph
7.59.fti.

3. If the affidavit additionally fails to establish
either conception or diligence, form paragraphs 7.61.fti and/or
7.62.fti
should precede this paragraph. If either conception or diligence is established, a
statement to that effect should be included after this paragraph.

4. An explanation of the lack of showing of the alleged
reduction to practice must be given in bracket 2.

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.].

The purpose of a 37 CFR
1.131(a) affidavit or declaration is to overcome a prior art
rejection under pre-AIA 35 U.S.C. 102 or 103 by proving invention of the
claimed subject matter by applicant prior to the effective date of the reference or
activity relied upon in the rejection.

In some situations, an applicant may,
alternatively, be able to overcome prior art rejections relying on references or
activities which are available as prior art under pre-AIA 35 U.S.C.
102(a) or references which are available as prior art under
pre-AIA 35 U.S.C. 102(e) by proving that the subject matter
relied upon in the reference or activity was applicant’s own invention.

715.01(a) Reference Is a Joint Patent or Published Application to
Applicant and Another

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

When subject matter, disclosed but
not claimed in a patent or application publication filed jointly by S and another, is
claimed in a later application filed by S, the joint patent or application
publication is a valid reference under pre-AIA 35 U.S.C. 102(a) or
(e) unless overcome by affidavit or declaration under
37 CFR 1.131 or an unequivocal declaration under
37 CFR 1.132 by S that he/she conceived or invented the
subject matter disclosed in the patent or application publication and relied on in
the rejection. In re DeBaun, 687 F.2d 459, 214
USPQ 933 (CCPA 1982). See MPEP § 716.10 for a discussion of
the use of 37 CFR 1.132 affidavits or
declarations to overcome rejections by establishing that the subject matter relied on
in the patent or application publication was the invention of the applicant.
Disclaimer by the other patentee or applicant of the application publication should
not be required but, if submitted, may be accepted by the examiner. For applications
subject to current 35 U.S.C. 102, see
MPEP
§§ 717 and 2155.01.

Although affidavits or
declarations submitted for the purpose of establishing that the reference discloses
applicant’s invention are properly filed under 37 CFR 1.132,
rather than 37
CFR 1.131(a), such affidavits submitted improperly under
37 CFR
1.131(a) will be considered as though they were filed under
37 CFR 1.132 to traverse a ground of rejection. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA
1969).

715.01(b) Reference and Application Have Common Assignee

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

The mere fact that the reference
patent or application publication which shows but does not claim certain subject
matter and the application which claims it are owned by the same assignee does not
avoid the necessity of filing an affidavit or declaration under 37 CFR
1.131(a), in the absence of a showing under 37 CFR
1.132 that the patentee derived the subject matter relied on
from the applicant (MPEP § 716.10). The common assignee
does not obtain any rights in this regard by virtue of common ownership which he or
she would not have in the absence of common ownership. In re
Frilette, 412 F.2d 269, 162 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124 USPQ 356 (D.C. Cir.
1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA
1946). Where, however, a rejection is applied under pre-AIA 35 U.S.C.
102(f)/103 or pre-AIA 35 U.S.C.
102(g)/103, or, in an application filed
on or after November 29, 1999, under pre-AIA 35 U.S.C.
102(e)/103 using the reference, a
showing that the invention was commonly owned, or subject to an obligation of
assignment to the same person, at the time the later invention was made would
preclude such a rejection or be sufficient to overcome such a rejection. See
MPEP
§ 706.02(l) and § 706.02(l)(1). For
applications subject to current 35 U.S.C. 102, see MPEP §
2154.02(c).

715.01(c) Reference Is Publication of Applicant’s Own
Invention

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

Unless it is a statutory bar, a
rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be
overcome by a showing that it was published either by applicant himself/herself or on
his/her behalf. Since such a showing is not made to show a date of invention by
applicant prior to the date of the reference under 37 CFR
1.131(a), the limitation in pre-AIA 35 U.S.C.
104 and in 37 CFR 1.131(a) that only acts
which occurred in this country or in a NAFTA or WTO member country may be relied on
to establish a date of invention is not applicable. See MPEP §
716.10 regarding 37 CFR 1.132
affidavits submitted to show that the reference is a publication of applicant’s own
invention to overcome a rejection based on pre-AIA 35 U.S.C. 102 or
103. For applications subject to current 35 U.S.C.
102, see MPEP §§ 2153 and
2154.

I.
CO-AUTHORSHIP

Where the applicant is one of
the co-authors of a publication cited against his or her application, he or she
may overcome the rejection by filing an affidavit or declaration under
37 CFR
1.131(a). Alternatively, the applicant may overcome the
rejection by filing a specific affidavit or declaration under 37 CFR
1.132 establishing that the article is describing
applicant’s own work. An affidavit or declaration by applicant alone indicating
that applicant is the sole inventor and that the others were merely working under
his or her direction is sufficient to remove the publication as a reference under
pre-AIA 35 U.S.C. 102(a).
In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA
1982).

II.
DERIVATION

When the unclaimed subject
matter of a patent, application publication, or other publication is applicant’s
own invention, a rejection, which is not a statutory bar, on that patent or
publication may be removed by submission of evidence establishing the fact that
the patentee, applicant of the published application, or author derived his or her
knowledge of the relevant subject matter from applicant. Moreover applicant must
further show that he or she made the invention upon which the relevant disclosure
in the patent, application publication, or other publication is based. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA
1969); In re Facius, 408 F.2d 1396, 161 USPQ
294 (CCPA 1969).

715.01(d) Activities Applied Against the Claims

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

Unless it is a statutory bar, a
rejection under pre-AIA 35 U.S.C. 102 or 103 based on an activity showing
that the claimed invention was used or known prior to the filing date of the
application may be overcome by an affidavit or declaration under 37 CFR
1.131(a) establishing a date of invention prior to the date of
the activity. Alternatively, the applicant(s) may overcome the rejection by filing a
specific affidavit or declaration under 37 CFR 1.132
showing that the activity was performed by the applicant(s).

715.02
How Much of the Claimed Invention Must Be Shown, Including the
General Rule as to Generic Claims [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

The 37 CFR
1.131(a) affidavit or declaration must establish possession of
either the whole invention claimed or something falling within the claim (such as a
species of a claimed genus), in the sense that the claim as a whole reads on it.
In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA
1965) (Where applicant claims an alloy comprising both nitrogen and molybdenum, an
affidavit showing applicant made an alloy comprising nitrogen but not molybdenum is not
sufficient under 37 CFR 1.131 to overcome a rejection
under pre-AIA 35 U.S.C. 103 based on the combined teachings of one
reference disclosing an alloy comprising nitrogen but not molybdenum and a second
reference disclosing an alloy comprising molybdenum but not nitrogen). Note, however,
where the differences between the claimed invention and the disclosure of the
reference(s) are so small as to render the claims obvious over the reference(s), an
affidavit or declaration under 37 CFR 1.131(a) is required to show
no more than the reference shows. In re Stryker, 435
F.2d 1340, 168 USPQ 372 (CCPA 1971). In other words, where the examiner, in rejecting a
claim under pre-AIA 35 U.S.C. 103, has treated a
claim limitation as being an obvious feature or modification of the disclosure of the
reference(s) relied upon, without citation of a reference which teaches such feature or
modification, a 37
CFR 1.131(a) affidavit or declaration may be sufficient to
overcome the rejection even if it does not show such feature or
modification.

Further, a 37 CFR
1.131(a) affidavit is not insufficient merely because it does not
show the identical disclosure of the reference(s) or the identical subject matter
involved in the activity relied upon. If the affidavit contains facts showing a
completion of the invention commensurate with the extent of the invention as claimed is
shown in the reference or activity, the affidavit or declaration is sufficient, whether
or not it is a showing of the identical disclosure of the reference or the identical
subject matter involved in the activity. See In re
Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970).

Even if applicant’s 37 CFR
1.131(a) affidavit is not fully commensurate with the rejected
claim, the applicant can still overcome the rejection by showing that the differences
between the claimed invention and the showing under 37 CFR
1.131(a) would have been obvious to one of ordinary skill in the
art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to
the effective date of the reference(s) or the activity. Such evidence is sufficient
because applicant’s possession of what is shown carries with it possession of variations
and adaptations which would have been obvious, at the same time, to one of ordinary
skill in the art. However, the affidavit or declaration showing must still establish
possession of the invention (i.e., the basic inventive concept) and not just of what one
reference (in a combination of applied references) happens to show, if that reference
does not itself teach the basic inventive concept. In re
Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was use
of electrostatic forces to adhere dry starch particles to a wet paper web on the
Fourdrinier wire of a paper-making machine. 37 CFR 1.131
affidavit established use of electrostatic forces to adhere starch particles to wet
blotting paper moved over a fluidized bed of starch particles prior to the applied
reference date. Affidavit was sufficient in view of prior art reference showing that
deposition of dry coatings directly on wet webs on the Fourdrinier wire of a
paper-making machine was well known in the art prior to the date of the applied
reference. The affidavit established possession of the basic invention, i.e., use of
electrostatic forces to adhere starch to wet paper.).

I.
SWEARING BEHIND ONE OF A PLURALITY OF COMBINED
REFERENCES

Applicant may overcome a
pre-AIA 35 U.S.C. 103 rejection based on a combination of
references by showing completion of the invention by applicant prior to the effective
date of any of the references; applicant need not antedate the reference with the
earliest filing date. However, as discussed above, applicant’s 37 CFR
1.131(a) affidavit must show possession of either the whole
invention as claimed or something falling within the claim(s) prior to the effective
date of the reference being antedated; it is not enough merely to show possession of
what the reference happens to show if the reference does not teach the basic
inventive concept.

Where a claim has been rejected
under pre-AIA 35 U.S.C. 103 based on
Reference A in view of Reference B, with the effective date of secondary Reference B
being earlier than that of Reference A, the applicant can rely on the teachings of
Reference B to show that the differences between what is shown in his or her
37 CFR
1.131(a) affidavit or declaration and the claimed invention
would have been obvious to one of ordinary skill in the art prior to the date of
Reference A. However, the 37 CFR 1.131(a) affidavit or
declaration must still establish possession of the claimed invention, not just what
Reference A shows, if Reference A does not teach the basic inventive
concept.

II.
GENERAL RULE AS TO GENERIC CLAIMS

A reference or activity applied
against generic claims may (in most cases) be antedated as to such claims by an
affidavit or declaration under 37 CFR 1.131(a) showing
completion of the invention of only a single species, within the genus, prior to the
effective date of the reference or activity (assuming, of course, that the reference
or activity is not a statutory bar or a patent, or an application publication,
claiming the same invention). See Ex parte
Biesecker, 144 USPQ 129 (Bd. App. 1964). See, also, In re Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961);
In re Dafano, 392 F.2d 280, 157 USPQ 192 (CCPA
1968) (distinguishing chemical species of genus compounds from embodiments of a
single invention). See, however, MPEP § 715.03 for
practice relative to cases in unpredictable arts.

715.03
Genus-Species, Practice Relative to Cases Where Predictability
Is in Question [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

Where generic claims have been
rejected on a reference or activity which discloses a species not antedated by the
affidavit or declaration, the rejection will not ordinarily be withdrawn, subject to the
rules set forth below, unless the applicant is able to establish that he or she was in
possession of the generic invention prior to the effective date of the reference or
activity. In other words, the affidavit or declaration under 37 CFR
1.131(a) must show as much as the minimum disclosure required by a
patent specification to furnish support for a generic claim.

I.
REFERENCE OR ACTIVITY DISCLOSES SPECIES

A.
Species Claim

Where the claim under rejection
recites a species and the reference or activity discloses the claimed species, the
rejection can be overcome under 37 CFR 1.131(a) directly by
showing prior completion of the claimed species or indirectly by a showing of
prior completion of a different species coupled with a showing that the claimed
species would have been an obvious modification of the species completed by
applicant. See In re Spiller, 500 F.2d 1170,
182 USPQ 614 (CCPA 1974).

B.
Genus Claim

The principle is well
established that the disclosure of a species in a cited reference is sufficient to
prevent a later applicant from obtaining a “generic claim.” In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.
Cir. 1989); In re Slayter, 276 F.2d 408, 125
USPQ 345 (CCPA 1960).

Where the only pertinent
disclosure in the reference or activity is a single species of the claimed genus,
the applicant can overcome the rejection directly under 37 CFR
1.131(a) by showing prior possession of the species
disclosed in the reference or activity. On the other hand, a reference or activity
which discloses several species of a claimed genus can be overcome directly under
37 CFR
1.131(a) only by a showing that the applicant completed,
prior to the date of the reference or activity, all of the species shown in the
reference. In re Stempel, 241 F.2d 755, 113
USPQ 77 (CCPA 1957).

Proof of prior completion of a
species different from the species of the reference or activity will be sufficient
to overcome a reference indirectly under 37 CFR 1.131(a) if the species
shown in the reference or activity would have been obvious in view of the species
shown to have been made by the applicant. In re
Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966); In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973);
In re Hostettler, 356 F.2d 562, 148 USPQ 514
(CCPA 1966). Alternatively, if the applicant cannot show possession of the species
of the reference or activity in this manner, the applicant may be able to antedate
the reference or activity indirectly by, for example, showing prior completion of
one or more species which put him or her in possession of the claimed genus prior
to the reference’s or activity’s date. The test is whether the species completed
by applicant prior to the reference date or the activity’s date provided an
adequate basis for inferring that the invention has generic applicability.
In re Plumb, 470 F.2d 1403, 176 USPQ 323
(CCPA 1973); In re Rainer, 390 F.2d 771, 156
USPQ 334 (CCPA 1968); In re Clarke, 356 F.2d
987, 148 USPQ 665 (CCPA 1966); In re Shokal,
242 F.2d 771, 113 USPQ 283 (CCPA 1957).

It is not necessary for the
affidavit evidence to show that the applicant viewed his or her invention as
encompassing more than the species actually made. The test is whether the facts
set out in the affidavit are such as would persuade one skilled in the art that
the applicant possessed so much of the invention as is shown in the reference or
activity. In re Schaub, 537 F.2d 509, 190 USPQ
324 (CCPA 1976).

C.
Species Versus Embodiments

References or activities which
disclose one or more embodiments of a single claimed invention, as opposed to
species of a claimed genus, can be overcome by filing a 37 CFR
1.131(a) affidavit showing prior completion of a single
embodiment of the invention, whether it is the same or a different embodiment from
that disclosed in the reference or activity. See In re
Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961) (Where applicant
discloses and claims a washing solution comprising a detergent and
polyvinylpyrrolidone (PVP), with no criticality alleged as to the particular
detergent used, the PVP being used as a soil-suspending agent to prevent the
redeposition of the soil removed, the invention was viewed as the use of PVP as a
soil-suspending agent in washing with a detergent. The disclosure in the reference
of the use of PVP with two detergents, both of which differed from that shown in
applicant’s 37 CFR 1.131(a) affidavit, was considered a disclosure of
different embodiments of a single invention, rather than species of a claimed
genus); In re Defano, 392 F.2d 280, 157 USPQ
192 (CCPA 1968).

II.
REFERENCE OR ACTIVITY DISCLOSES CLAIMED GENUS

In general, where the reference or
activity discloses the claimed genus, a showing of completion of a single species
within the genus is sufficient to antedate the reference or activity under
37 CFR
1.131(a). Ex parte
Biesecker, 144 USPQ 129 (Bd. App. 1964).

In cases where predictability is
in question, on the other hand, a showing of prior completion of one or a few species
within the disclosed genus is generally not sufficient to overcome the reference or
activity. In re Shokal, 242 F.2d 771, 113 USPQ 283
(CCPA 1957). The test is whether the species completed by applicant prior to the
reference date or the date of the activity provided an adequate basis for inferring
that the invention has generic applicability. In re
Mantell, 454 F.2d 1398, 172 USPQ 530 (CCPA 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968);
In re DeFano, 392 F.2d 280, 157 USPQ 192 (CCPA
1968); In re Clarke, 356 F.2d 987, 148 USPQ 665
(CCPA 1965). In the case of a small genus such as the halogens, which consists of
four species, a reduction to practice of three, or perhaps even two, species might
show possession of the generic invention, while in the case of a genus comprising
hundreds of species, reduction to practice of a considerably larger number of species
would be necessary. In re Shokal, supra.

It is not necessary for the
affidavit evidence to show that the applicant viewed his or her invention as
encompassing more than the species he or she actually made. The test is whether the
facts set out in the affidavit are such as would persuade one skilled in the art that
the applicant possessed so much of the invention as is shown in the reference.
In re Schaub, 537 F. 509, 190 USPQ 324 (CCPA
1976).

715.04
Who May Make Affidavit or Declaration Under 37 CFR 1.131(a);
Formal Requirements of Affidavits and Declarations [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

I.
WHO MAY MAKE AFFIDAVIT OR DECLARATION

(B) Less than all named
inventors of an application if it is shown by affidavit or declaration that
less than all named inventors of an application invented the subject matter
of the claim or claims under rejection. For example, one of two joint
inventors is accepted where it is shown that one of the joint inventors is
the sole inventor of the claim or claims under rejection.

(D) For affidavits and
declarations in applications filed before September 16, 2012, the legal
representive of a deceased, insane or otherwise legally incapacitated
inventor under pre-AIA 37 CFR 1.42 or
1.43.

(E) For affidavits and declarations
submitted in applications filed on or after September 16, 2012, the party
qualified under 37 CFR 1.42 or
1.46.

(F) The assignee or other party in
interest when it is not possible to produce the affidavit or declaration of
the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G.
261 (Comm’r Pat. 1903).

(G) The owner of the patent under
reexamination.

For affidavits and declarations
submitted in applications filed before September 16, 2012, where one or more of the
named inventors of the subject matter of the rejected claim(s) (who had originally
signed the oath or declaration for patent application under 37 CFR
1.63) is thereafter unavailable to sign an affidavit or
declaration under 37 CFR 1.131(a), the affidavit or
declaration under 37 CFR 1.131(a) may be signed by
the remaining joint inventors provided a petition under 37 CFR 1.183
requesting waiver of the signature of the unavailable inventor is submitted with the
affidavit or declaration under 37 CFR 1.131(a). Proof that the
non-signing inventor is unavailable or cannot be found (similar to the proof required
for a petition under pre-AIA 37 CFR 1.47) must be
submitted with the petition under 37 CFR 1.183 (see
MPEP §
409.03(d)). Petitions under 37 CFR 1.183
are decided by the Office of Petitions (see MPEP § 1002.02(b)).

II.
FORMAL REQUIREMENTS OF AFFIDAVITS AND
DECLARATIONS

An affidavit is a statement in
writing made under oath before a notary public, magistrate, or officer authorized to
administer oaths. See MPEP § 602et seq. for additional information regarding formal requirements
of affidavits.

37
CFR 1.68 permits a declaration to be used instead of an
affidavit. The declaration must include an acknowledgment by the declarant that
willful false statements and the like are punishable by fine or imprisonment, or both
(18 U.S.C. 1001) and may jeopardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the body of the declaration that all
statements made of the declarant’s own knowledge are true and that all statements
made on information and belief are believed to be true.

715.05
U.S. Patent or Application Publication Claiming Same
Invention [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

For applications subject to
pre-AIA 35 U.S.C.
102, when the reference in question is a noncommonly owned U.S.
patent or patent application publication claiming the same invention as applicant and
its publication date is less than 1 year prior to the presentation of claims to that
invention in the application being examined, applicant’s remedy, if any, must be by way
of 37
CFR 41.202 instead of 37 CFR 1.131(a). If the reference is
claiming the same invention as the application and its publication date is less than 1
year prior to the presentation of claims to that invention in the application, this fact
should be noted in the Office action. The reference can then be overcome only by way of
interference. See MPEP Chapter 2300. If the reference is
a U.S. patent which claims the same invention as the application and its issue date is
more than 1 year prior to the presentation of claims to that invention in the
application, a rejection of the claims of the application under pre-AIA 35 U.S.C.
135(b)(1) applicable generally to applications subject to
pre-AIA 35 U.S.C.
102, see MPEP § 2159, should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997)
(The court holding that application of 35 U.S.C. 135(b) is
not limited to inter partes interference proceedings,
but may be used as a basis for ex parte rejections.).
The expression “prior to one year from the date on which the patent was granted” in
pre-AIA
35 U.S.C. 135(b) includes the one-year anniversary date of the
issuance of a patent. See Switzer v. Sockman, 333
F.2d 935, 142 USPQ 226 (CCPA 1964).

If the reference is a U.S. patent
application publication under 35 U.S.C. 122(b), or a WIPO
publication on an international application filed on or after November 29, 2000, which
claims the same invention as the application being examined and its publication date is
more than 1 year prior to the presentation of claims to that invention in the
application being examined, a rejection of the claims of the application (being
examined) under pre-AIA 35 U.S.C. 135(b)(2)
applicable generally to applications subject to pre-AIA 35 U.S.C. 102, see MPEP §
2159, should be made only if the application being examined was filed after the
publication date of the reference.

¶ 23.14
Claims Not Copied Within One Year of Patent Issue Date

Claim [l] rejected under
pre-AIA 35 U.S.C.
135(b)(1) as not being made prior to one year from the date on which
U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d
1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA
35 U.S.C.
135(b) may be used as a basis for ex parte
rejections.

¶ 23.14.01
Claims Not Copied Within One Year Of Application Publication Date

Claim [l] rejected under
pre-AIA 35 U.S.C.
135(b)(2) as not being made prior to one year from the date on which
[2] was published under 35 U.S.C. 122(b). See In re
McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the
Court held that pre-AIA 35
U.S.C. 135(b) may be used as a basis for ex parte
rejections.

Examiner Note:

1. In bracket 2, insert the
publication number of the published application.

2. This form paragraph should only
be used if the application being examined was filed after the publication date of the
published application.

Where the reference and the
application or patent under reexamination are commonly owned, and the inventions defined
by the claims in the application or patent under reexamination and by the claims in the
reference are not identical but are not patentably distinct, a terminal disclaimer and
an affidavit or declaration under 37 CFR 1.131(c) may be used to
overcome a rejection under 35 U.S.C. 103. See
MPEP §
718.

A 37 CFR
1.131(a) affidavit is ineffective to overcome a United States
patent or patent application publication, not only where there is a verbatim
correspondence between claims of the application and of the patent, but also where there
is no patentable distinction between the respective claims. In
re Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958);
In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA
1956); In re Wagenhorst, 62 F.2d 831, 16 USPQ 126
(CCPA 1933).

If the application (or patent under
reexamination) and the domestic reference contain claims which are identical, or which
are not patentably distinct, then the application and patent are claiming
"interfering subject matter"
as defined in
37 CFR
41.203(a).

As provided in 37 CFR
41.203(a), an interference exists if the subject matter of a claim
of one party would, if prior art, have anticipated or rendered obvious the subject
matter of a claim of the opposing party and vice versa. An applicant who is claiming an
invention which is identical to, or obvious in view of, the invention as claimed in
a domestic patent or patent application publication cannot employ an affidavit under
37 CFR
1.131(a) as a means for avoiding an interference with the
reference. To allow an applicant to do so would result in the issuance of two patents to
the same invention.

Since 37 CFR
1.131(a) defines
"interfering subject
matter"
in the same way as the interference rules
(37
CFR 41.203(a)), the USPTO cannot prevent an applicant from
overcoming a reference by a 37 CFR 1.131(a) affidavit or
declaration on the grounds that the reference claims applicant’s invention and, at the
same time, deny applicant an interference on the grounds that the claims of the
application and those of the reference are not for substantially the same invention. See
In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA
1979). Where, in denying an applicant’s motion in interference to substitute a broader
count, it is held that the limitation to be deleted was material for the opponent
patentee, this constitutes a holding that the proposed count is for an invention which
is not interfering subject matter with respect to the claims of the reference.
Therefore, the applicant may file an affidavit or declaration under 37 CFR
1.131(a) to overcome a prior art rejection based on the reference.
Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Int.
1968).

Form paragraph
7.58.fti (reproduced in MPEP §
715) may be used to note such a situation in the Office
action.

715.06
[Reserved]

715.07
Facts and Documentary Evidence [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

I.
GENERAL REQUIREMENTS

The essential thing to be shown
under 37 CFR
1.131(a) is priority of invention and this may be done by any
satisfactory evidence of the fact. FACTS, not conclusions, must be alleged. Evidence
in the form of exhibits may accompany the affidavit or declaration. Each exhibit
relied upon should be specifically referred to in the affidavit or declaration, in
terms of what it is relied upon to show. For example, the allegations of fact might
be supported by submitting as evidence one or more of the following:

(G) testimony given in an
interference. Where interference testimony is used, the applicant must point
out which parts of the testimony are being relied on; examiners cannot be
expected to search the entire interference record for the
evidence;

(H) documents submitted under
the Disclosure Document Program (discontinued February 1, 2007) may be used
as documentary evidence of conception.

Exhibits and models must comply
with the requirements of 37 CFR 1.91 to be entered into an
application file. See also MPEP § 715.07(d).

A general allegation that the
invention was completed prior to the date of the reference is not sufficient.
Similarly, a declaration by the inventor to the effect that his or her invention was
conceived or reduced to practice prior to the reference date, without a statement of
facts demonstrating the correctness of this conclusion, is insufficient to satisfy
37 CFR
1.131(a).

37
CFR 1.131(b) requires that original exhibits of drawings or
records, or photocopies thereof, accompany and form part of the affidavit or
declaration or their absence satisfactorily explained. In Ex
parte Donovan, 1890 C.D. 109, 52 O.G. 309 (Comm’r Pat. 1890) the court
stated

If the applicant made sketches
he should so state, and produce and describe them; if the sketches were made and
lost, and their contents remembered, they should be reproduced and furnished in
place of the originals. The same course should be pursued if the disclosure was by
means of models. If neither sketches nor models are relied upon, but it is claimed
that verbal disclosures, sufficiently clear to indicate definite conception of the
invention, were made the witness should state as nearly as possible the language
used in imparting knowledge of the invention to others.

When reviewing a 37 CFR
1.131(a) affidavit or declaration, the examiner must consider
all of the evidence presented in its entirety, including the affidavits or
declarations and all accompanying exhibits, records and “notes.” An accompanying
exhibit need not support all claimed limitations, provided that any missing
limitation is supported by the declaration itself. Ex parte
Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. & Inter.
1989).

The affidavit or declaration and
exhibits must clearly explain which facts or data applicant is relying on to show
completion of his or her invention prior to the particular date. Vague and general
statements in broad terms about what the exhibits describe along with a general
assertion that the exhibits describe a reduction to practice “amounts essentially to
mere pleading, unsupported by proof or a showing of facts” and, thus, does not
satisfy the requirements of 37 CFR 1.131(b). In re Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974).
Applicant must give a clear explanation of the exhibits pointing out exactly what
facts are established and relied on by applicant. 505 F.2d at 718-19, 184 USPQ at 33.
See also In re Harry, 333 F.2d 920, 142 USPQ 164
(CCPA 1964) (Affidavit “asserts that facts exist but does not tell what they are or
when they occurred.”).

II.
ESTABLISHMENT OF DATES

If the dates of the exhibits have
been removed or blocked off, the matter of dates can be taken care of in the body of
the oath or declaration.

When alleging that conception or a
reduction to practice occurred prior to the effective date of the reference, the
dates in the oath or declaration may be the actual dates or, if the applicant or
patent owner does not desire to disclose his or her actual dates, he or she may
merely allege that the acts referred to occurred prior to a specified date. However,
the actual dates of acts relied on to establish diligence must be provided. See
MPEP
§ 715.07(a) regarding the diligence
requirement.

III.
THREE WAYS TO SHOW PRIOR INVENTION

The affidavit or declaration must
state FACTS and produce such documentary evidence and exhibits in support thereof as
are available to show conception and completion of invention in this country or in
a NAFTA or WTO member country (MPEP § 715.07(c)), at least the
conception being at a date prior to the effective date of the reference. Where there
has not been reduction to practice prior to the date of the reference, the applicant
or patent owner must also show diligence in the completion of his or her invention
from a time just prior to the date of the reference continuously up to the date of an
actual reduction to practice or up to the date of filing his or her application
(filing constitutes a constructive reduction to practice, 37 CFR
1.131).

As discussed above,
37 CFR 1.131(b) provides three ways in which an applicant can
establish prior invention of the claimed subject matter. The showing of facts must be
sufficient to show:

(A) (actual) reduction to
practice of the invention prior to the effective date of the reference;
or

(B) conception of the
invention prior to the effective date of the reference coupled with due
diligence from prior to the reference date to a subsequent (actual)
reduction to practice; or

(C) conception of the
invention prior to the effective date of the reference coupled with due
diligence from prior to the reference date to the filing date of the
application (constructive reduction to practice).

A conception of an invention,
though evidenced by disclosure, drawings, and even a model, is not a complete
invention under the patent laws, and confers no rights on an inventor, and has no
effect on a subsequently granted patent to another, UNLESS THE INVENTOR FOLLOWS IT
WITH REASONABLE DILIGENCE BY SOME OTHER ACT, such as an actual reduction to practice
or filing an application for a patent. Automatic Weighing
Mach. Co. v. Pneumatic Scale Corp., 166 F.2d 288, 1909 C.D. 498, 139
O.G. 991 (1st Cir. 1909).

Conception is the mental part of
the inventive act, but it must be capable of proof, as by drawings, complete
disclosure to another person, etc. In Mergenthaler v.
Scudder, 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 1897), it was
established that conception is more than a mere vague idea of how to solve a problem;
the means themselves and their interaction must be comprehended also.

In general, proof of actual
reduction to practice requires a showing that the apparatus actually existed and
worked for its intended purpose. However, “there are some devices so simple that a
mere construction of them is all that is necessary to constitute reduction to
practice.” In re Asahi/America Inc., 68 F.3d 442,
37 USPQ2d 1204, 1206 (Fed. Cir. 1995) (Citing Newkirk v.
Lulejian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253
(CCPA 1931). The claimed restraint coupling held to be so simple a device that mere
construction of it was sufficient to constitute reduction to practice. Photographs,
coupled with articles and a technical report describing the coupling in detail were
sufficient to show reduction to practice.).

The facts to be established under
37 CFR
1.131(a) are similar to those to be proved in interference. The
difference lies in the way in which the evidence is presented. If applicant disagrees
with a holding that the facts are insufficient to overcome the rejection, his or her
remedy is by appeal from the continued rejection.

See MPEP §
2138.04 through § 2138.06 for a
detailed discussion of the concepts of conception, reasonable diligence, and
reduction to practice.

For the most part, the terms
“conception,” “reasonable diligence,” and “reduction to practice” have the same
meanings under 37 CFR 1.131(a) as they have in interference proceedings.
However, in In re Eickmeyer, 602 F.2d 974, 202
USPQ 655 (CCPA 1979), the court stated:

The purpose of filing a [37 CFR
1.]131 affidavit is not to demonstrate prior invention, per se, but merely to antedate the effective date of a reference.
See In re Moore, 58 CCPA 1340, 444 F.2d 572,
170 USPQ 260 (1971). Although the test for sufficiency of an affidavit under Rule
131(b) parallels that for determining priority of invention in an interference
under pre-AIA 35 U.S.C. 102(g), it
does not necessarily follow that Rule 131 practice is controlled by interference
law. To the contrary, “[t]he parallel to interference practice found in Rule
131(b) should be recognized as one of convenience rather than necessity.” Id. at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus,
“the ‘conception’ and ‘reduction to practice’ which must be established under the
rule need not be the same as what is required in the ‘interference’ sense of those
terms.” Id.; accord, In re Borkowski, 505 F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA
1974).

One difference is that in
interference practice a reduction to practice requires a proof that a utility was
known, whereas under 37 CFR 1.131(a) practice, proof
of a utility must be shown only if the reference discloses a utility. In re Wilkinson, 304 F.2d 673, 134 USPQ 171 (CCPA 1962);
In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA
1971). Where proof of utility is required, whether or not test results are required
to establish the utility of the subject matter in question depends on the facts of
each case. The ultimate issue is whether the evidence is such that one of ordinary
skill in the art would be satisfied to a reasonable certainty that the subject matter
necessary to antedate the reference possessed the alleged utility. In re Blake, 358 F.2d 750, 149 USPQ 217 (CCPA 1966).
Also, in interference practice, conception, reasonable diligence, and reduction to
practice require corroboration, whereas averments made in a 37 CFR
1.131(a) affidavit or declaration do not require corroboration;
an applicant may stand on his or her own affidavit or declaration if he or she so
elects. Ex parte Hook, 102 USPQ 130 (Bd. App.
1953).

715.07(a) Diligence

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

Where conception occurs prior to
the date of the reference, but reduction to practice is afterward, it is not enough
merely to allege that applicant or patent owner had been diligent. Rather, applicant
must show evidence of facts establishing diligence.

In determining the sufficiency of
a 37 CFR 1.131(a) affidavit or declaration, diligence need not
be considered unless conception of the invention prior to the effective date is
clearly established, pursuant to 37 CFR 1.131(b), diligence comes
into question only after prior conception is established.

In patent law, an inventor is
either diligent at a given time or he is not diligent; there are no degrees of
diligence. An applicant may be diligent within the meaning of the patent law when he
or she is doing nothing, if his or her lack of activity is excused. Note, however,
that the record must set forth an explanation or excuse for the inactivity; the USPTO
or courts will not speculate on possible explanations for delay or inactivity. See
In re Nelson,, 420 F.2d 1079, 164 USPQ 458
(CCPA 1970). Diligence must be judged on the basis of the particular facts in each
case. See MPEP § 2138.06 for a detailed
discussion of the diligence requirement for proving prior invention.

Under 37 CFR
1.131(a), the critical period in which diligence must be shown
begins just prior to the effective date of the reference or activity and ends with
the date of a reduction to practice, either actual or constructive (i.e., filing a
United States patent application). Note, therefore, that only diligence before
reduction to practice is a material consideration.Any lack of due diligence between
an actual reduction to practice of an invention and the filing of an application
thereon is not relevant to the sufficiency of an affidavit or declaration under
37 CFR 1.131(a).

715.07(b) Interference Testimony Sometimes Used

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

In place of an affidavit or
declaration the testimony of the applicant in an interference may be sometimes used
to antedate a reference in lieu of 37 CFR 1.131(a) affidavit or
declaration.

The part of the testimony to form
the basis of priority over the reference should be pointed out. Ex parte Bowyer, 1939 C.D. 5, 42 USPQ 526 (Comm’r Pat.
1939).

715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country
or a NAFTA or WTO Member Country

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to
file provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100
(note) and MPEP §
2159. For a discussion of 37 CFR
1.130, affidavits or declarations of attribution or prior
public disclosure in applications subject to the first inventor to file provisions
of the AIA, see MPEP § 717. For a discussion of
affidavits or declarations under 37 CFR 1.131(c), see
MPEP §
718.]

Pre-AIA 35 U.S.C. 104
Invention Made Abroad.

(a) IN
GENERAL.—

(1) PROCEEDINGS.—In
proceedings in the Patent and Trademark Office, in the courts, and
before any other competent authority, an applicant for a patent, or
a patentee, may not establish a date of invention by reference to
knowledge or use thereof, or other activity with respect thereto,
in a foreign country other than a NAFTA country or a WTO member
country, except as provided in sections
119 and
365 of this title.

(2) RIGHTS.—If an
invention was made by a person, civil or military—

(A) while
domiciled in the United States, and serving in any other
country in connection with operations by or on behalf of the
United States,

(B) while
domiciled in a NAFTA country and serving in another country
in connection with operations by or on behalf of that NAFTA
country, or

(C) while
domiciled in a WTO member country and serving in another
country in connection with operations by or on behalf of that
WTO member country, that person shall be entitled to the same
rights of priority in the United States with respect to such
invention as if such invention had been made in the United
States, that NAFTA country, or that WTO member country, as
the case may be.

(3) USE OF
INFORMATION.—To the extent that any information in a NAFTA country
or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention has
not been made available for use in a proceeding in the Patent and
Trademark Office, a court, or any other competent authority to the
same extent as such information could be made available in the
United States, the Director, court, or such other authority shall
draw appropriate inferences, or take other action permitted by
statute, rule, or regulation, in favor of the party that requested
the information in the proceeding.

(b) DEFINITIONS.—As used
in this section—

(1) The term “NAFTA
country” has the meaning given that term in section 2(4) of the
North American Free Trade Agreement Implementation Act;
and

(2) The term “WTO
member country” has the meaning given that term in section 2(10) of
the Uruguay Round Agreements Act.

The 37 CFR
1.131(a) affidavit or declaration must contain an allegation
that the acts relied upon to establish the date prior to the reference or activity
were carried out in this country or in a NAFTA country or WTO member country. See
pre-AIA 35 U.S.C. 104.

Under 37 CFR
1.131(a), which provides for the establishment of a date of
completion of the invention in a NAFTA or WTO member country, as well as in the
United States, an applicant can establish a date of completion in a NAFTA member
country on or after December 8, 1993, the effective date of section 331 of Public Law
103-182, the North American Free Trade Agreement Act, and can establish a date of
completion in a WTO member country other than a NAFTA member country on or after
January 1, 1996, the effective date of section 531 of Public Law 103-465, the Uruguay
Round Agreements Act. Acts occurring prior to the effective dates of NAFTA or URAA
may be relied upon to show completion of the invention; however, a date of completion
of the invention may not be established under 37 CFR 1.131(a) before December
8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a
NAFTA country.

715.07(d) Disposition of Exhibits

Exhibits, such as those filed as
part of an affidavit or declaration under 37 CFR 1.131(a), must comply with
the requirements of 37 CFR 1.91 to be entered into an
application file. Exhibits that do not comply with the requirements of
37 CFR 1.91 will be disposed of or returned to applicant at
the discretion of the Office. See also MPEP §
608.03(a).

715.08
Decided by Primary Examiner [R-11.2013]

The question of sufficiency of
affidavits or declarations under 37 CFR 1.131(a) should be reviewed
and decided by a primary examiner.

Review of an examiner’s decision with
regard to questions of formal sufficiency and propriety of an affidavit or declaration
under 37 CFR
1.131(a) is by a petition filed under 37 CFR
1.181. Such petitions are answered by the Technology Center
Directors (MPEP § 1002.02(c)).

Review of an examiner’s determination
on the merits of a 37 CFR 1.131(a) affidavit or
declaration is by appeal to the Patent Trial and Appeal Board.

715.09
Timely Presentation [R-11.2013]

Affidavits or declarations under
37 CFR
1.131(a) must be timely presented in order to be admitted.
Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence
traversing rejections are considered timely if submitted:

(A) prior to a final
rejection;

(B) before appeal in an
application not having a final rejection;

(C) after final rejection, but
before or on the same date of filing an appeal, upon a showing of good and
sufficient reasons why the affidavit or other evidence is necessary and was not
earlier presented in compliance with 37 CFR
1.116(e); or

(D) after the prosecution is
closed (e.g., after a final rejection, after appeal, or after allowance) if
applicant files the affidavit or other evidence with a request for continued
examination (RCE) under 37 CFR 1.114 in a utility
or plant application filed on or after June 8, 1995; or a continued prosecution
application (CPA) under 37 CFR 1.53(d) in a design
application.

All admitted affidavits and
declarations are acknowledged and commented upon by the examiner in his or her next
succeeding action.

Review of an examiner’s refusal to
enter an affidavit as untimely is by petition and not by appeal to the Patent Trial and
Appeal Board. In re Deters, 515 F.2d 1152, 185 USPQ
644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App.
1941). See MPEP § 715.08 regarding review of questions of propriety of
37
CFR 1.131(a) affidavits and declarations.

715.10
Review of Affidavit or Declaration for Evidence of Prior Public
Use or Sale or Failure to Disclose Best Mode [R-11.2013]

[Editor Note: This MPEP section is
not applicable to applications subject to the first inventor to file
provisions of the AIA unless being relied upon to overcome a rejection under
pre-AIA 35
U.S.C. 102(g). See 35 U.S.C. 100 (note) and
MPEP
§ 2159. For a discussion of 37 CFR 1.130,
affidavits or declarations of attribution or prior public disclosure in applications
subject to the first inventor to file provisions of the AIA, see
MPEP §
717. For a discussion of affidavits or declarations under
37 CFR
1.131(c), see MPEP §
718.]

Any affidavits or declarations
submitted under 37
CFR 1.131(a) and the accompanying evidence must be reviewed
carefully by the examiner in order to determine whether they show that the claimed
invention was “in public use” or “on sale” in this country more than one year prior to
the effective filing date of the application, which acts constitute a statutory bar
under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the
reference(s) or activity sought to be antedated may actually be overcome by such an
affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale”
activities may not be overcome under 37 CFR 1.131(a). See
MPEP §
2133.03 regarding rejections based on “public use” and “on
sale” statutory bars under pre-AIA 35 U.S.C.
102.

Where the 37 CFR
1.131(a) evidence relies on an embodiment of the invention not
disclosed in the application, the question of whether the application includes the “best
mode” must be considered. However, a “best mode” rejection should not be made unless the
record, taken as a whole, establishes by a preponderance of the evidence that
applicant's specification has not set forth the best mode contemplated by the inventor
of carrying out the invention. See MPEP §§ 2165 -
§
2165.04 regarding the best mode requirement of
35 U.S.C.
112(a) or pre-AIA 35 U.S.C. 112, first
paragraph.